DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “machine control device” used throughout the claims.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
For the record:
No corresponding structure for the limitation “machine control device” as is required under 35 U.S.C. 112(f). See corresponding rejections under 35 U.S.C. 112(a) & (b), below.
“Refrigeration system” is considered a generally understood term of art, and thus has not been interpreted under 35 U.S.C. 112(f).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “machine control device” has been interpreted under 35 U.S.C. 112(f) as discussed above. However, since the disclosure fails to describe the corresponding structure of the limitation “machine control device” as required under that statute, Applicant has not demonstrated full possession of the metes and bounds of the claimed invention at the effective filing date of the application.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “machine control device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
In addition:
Claim 5 recites the limitation "the controller" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 5 and 15 recites the limitation "the regulated speed". There is insufficient antecedent basis for this limitation in the claims.
Claims 5 and 15 recite setting the regulated speed at a minimum supplied voltage. First, independent claims 1 and 11 recite varying the speed of the motor, so it is unclear how it can be set at a particular value. Further, it is unclear how a speed is set at a voltage. Finally, it is unclear what constitutes the “minimum” voltage (i.e., minimum based on what?). Given the multiple indefinite aspects of the claim, examination on the merits of claims 5 and 15 is precluded at this time.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 6-9, 11-12, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ross (US 2005/0081554 A1) in view of Dorman et al. (US 2012/0017634 A1).
As per claim 1, Ross discloses a frozen confection machine comprising: a refrigeration system 14; a machine control device (motor control circuit 48); a variable frequency drive communicatively coupled to the machine control device (para. 0032); a beater motor 46 connected to the variable frequency drive (para. 0032); and wherein the machine control device provides a command signal to the variable frequency drive to vary a speed of the beater motor regulating a size of ice crystals of a frozen confection product (para. 0038). Ross does not disclose the control device and variable speed drive being communicatively coupled to the refrigeration system; and wherein the variable frequency drive calculates the beater motor torque and the machine control device regulates the refrigeration system activation. Dorman et al. teach a control device 60 and variable speed drive 38 being communicatively coupled to the refrigeration system (Fig. 4; etc.), and wherein the control device regulates the refrigeration system activation (Abstract; paras. 0018, 0020, 0068; etc.). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly controlling the activation and speed on the refrigeration system of Ross via the control device for the same basic purpose of optimizing the cooling operation of the system. Further, Nystrom teaches the concept of calculating the torque at a variable speed drive (col. 2, lines 4-17, 62-66; etc.). Note further that claim simply calculates the torque does not apply that calculation into any actual controls. Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly calculate the torque for the simple purpose of monitoring the functional operation of the system.
As per claim 2, Ross further discloses wherein the control device provides instructions to the variable frequency drive to vary a speed of the beater motor regulating the size of ice crystals of the frozen confection product (para. 0038). Further, since varying speed implicitly also varies torque, Ross is also deemed to also vary the torque of the beater motor.
As per claim 6-9, official notice is taken that, absent any unexpected results, speed, torque, and temperature values are simply result effective variables for obtaining desired consistencies for the respective confection products that would have been obvious to one of ordinary skill in the art at the effective filing date of the application to arrive at via routine experimentation.
As per claim 11, As per claim 1, Ross discloses a frozen confection machine comprising: a refrigeration system 14; a machine control device (motor control circuit 48); a variable frequency drive communicatively coupled to the machine control device (para. 0032); a beater motor 46 connected to the variable frequency drive (para. 0032); and wherein the machine control device provides a command signal to the variable frequency drive to vary a speed of the beater motor regulating an overrun of a frozen confection product (para. 0038). Ross does not disclose the control device and variable speed drive being communicatively coupled to the refrigeration system; and wherein the variable frequency drive calculates the beater motor torque and the machine control device regulates the refrigeration system activation. Dorman et al. teach a control device 60 and variable speed drive 38 being communicatively coupled to the refrigeration system (Fig. 4; etc.), and wherein the control device regulates the refrigeration system activation (Abstract; paras. 0018, 0020, 0068; etc.). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly controlling the activation and speed on the refrigeration system of Ross via the control device for the same basic purpose of optimizing the cooling operation of the system. Further, Nystrom teaches the concept of calculating the torque at a variable speed drive (col. 2, lines 4-17, 62-66; etc.). Note further that claim simply calculates the torque does not apply that calculation into any actual controls. Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly calculate the torque for the simple purpose of monitoring the functional operation of the system.
As per claim 12, Ross further discloses wherein the control device provides instructions to the variable frequency drive to vary a speed of the beater motor regulating the size of ice crystals of the frozen confection product (para. 0038).
As per claims 16-19, see similar claims 6-9, respectively, above.
Claim(s) 3 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ross (US 2005/0081554 A1) in view of Dorman et al. (US 2012/0017634 A1), and further in view of Selvaraj et al. (US 2020/0321824 A1).
As per claims 3 and 13, Ross does not disclose wherein the variable frequency drive includes a frequency inverter that varies an incoming power supply to the beater motor controlling the speed of the beater motor. Selvaraj et al. teach the basic concept of a variable frequency drive includes a frequency inverter that varies an incoming power supply to a motor controlling the speed of the motor (para. 0004). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly provide such a control arrangement to the beater motor of Ross for the same basic purpose of effectively controlling the speed of the motor.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ross (US 2005/0081554 A1) in view of Dorman et al. (US 2012/0017634 A1), and further in view of McSweeney (US 2014/0033746 A1).
As per claim 10, Ross does not teach wherein the machine control device modifies a suction pressure of the refrigeration system to set an evaporator pressure, thereby controlling the size of the ice crystals. First, it is noted that since both the suction pressure and the evaporator pressure are both on the low pressure side of the refrigeration cycle, according to basic thermodynamics of the refrigeration Carnot cycle, the two pressures should be essentially equivalent. Further, also according to the Carnot cycle, controlling the low side pressure effectively controls the operating temperature of the evaporator. Further, within the context of the present invention, one of ordinary skill in the art at the effective filing date of the application would have readily understood that the evaporation temperature would have an effect on ice crystal formation. McSweeney teaches the concept of modifies a suction pressure of the refrigeration system to set an evaporator pressure (which is essentially the same as the suction pressure), and accordingly an evaporator temperature (see claims 5 and 15, etc., of McSweeney et al.). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly control the suction pressure of Ross to thus control both the operating pressure and temperature of the evaporator for the purpose of optimizing the amount of cooling provided which, as a result, also controls the size of ice crystals being formed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 11-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12004532 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches the claimed subject matter of the instant invention as follows:
Pending claim 1 is taught by the combined subject matter of patented claims 1 and 5. Patented claim 1 discloses a frozen confection machine comprising: a refrigeration system; a variable frequency drive connected to the refrigeration system; a beater motor connected to the variable frequency drive; wherein the variable frequency drive calculates the beater motor torque and regulates the refrigeration system activation and wherein the variable frequency drive varies a speed of the beater motor regulating a size of ice crystals of a frozen confection product. Patented claim 5 disclose the remaining features regarding a controller connected to the variable frequency drive, the controller activating and deactivating the refrigeration system. However, pending claim 1 recites a “machine control device” which is interpreted under 35 U.S.C. 112(f), as set forth above (and is unsupported and indefinite as set forth in the rejections under 35 U.S.C. 112 (a) & (b), above), and thus differs in scope from the “controller” of the patented claims, which is interpreted according to broadest reasonable interpretation. Nevertheless, for purposes of examination, it is deemed that one of ordinary skill at the effective filing date of the application, would have understood “controller” to have been one possible interpretation of “machine control device” such that the subject matter of pending claim 1 is considered close enough in scope to constitute an obvious-type non-statutory double patenting of patented claims 1 and 5.
Pending dependent claims 2-9 correspond directly to patented dependent claims 2-4 and 6-10, respectively.
Pending claim 11 is taught by the combined subject matter of patented claims 11 and 15. Patented claim 11 discloses a frozen confection machine comprising: a refrigeration system; a variable frequency drive connected to the refrigeration system; a beater motor connected to the variable frequency drive; wherein the variable frequency drive calculates the beater motor torque and regulates the refrigeration system activation and wherein the variable frequency drive varies a torque of the beater motor regulating an overrun of a frozen confection product. Patented claim 15 disclose the remaining features regarding a controller connected to the variable frequency drive, the controller activating and deactivating the refrigeration system. However, pending claim 11 recites a “machine control device” which is interpreted under 35 U.S.C. 112(f), as set forth above (and is unsupported and indefinite as set forth in the rejections under 35 U.S.C. 112 (a) & (b), above), and thus differs in scope from the “controller” of the patented claims, which is interpreted according to broadest reasonable interpretation. Nevertheless, for purposes of examination, it is deemed that one of ordinary skill at the effective filing date of the application, would have understood “controller” to have been one possible interpretation of “machine control device” such that the subject matter of pending claim 1 is considered close enough in scope to constitute an obvious-type non-statutory double patenting of patented claims 11 and 15.
Pending dependent claims 12-19 correspond directly to patented dependent claims 12-14 and 16-20, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC E NORMAN whose telephone number is (571)272-4812. The examiner can normally be reached 8:00-4:30 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached at 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC E NORMAN/Primary Examiner, Art Unit 3763